The Complainant is Converse, Inc. of Andover, United States of America, represented by FairWinds Partners, LLC, United States of America.
The Respondent is Feng Ye/Denny Liao of Guangzhou China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2011. The Complaint contains a request for English to be the language of the proceeding. On August 19, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Disputed Domain Name. On August 22, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 24, 2011, the Center transmitted an email to the parties in Chinese and English concerning the language of the proceeding. On August 25, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on October 3, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant was founded in 1908 and designed and sold footwear, apparel and athletic equipment throughout the world under trade marks comprising the word CONVERSE (the “CONVERSE Marks”). These products were sold through the Complainant’s own retail stores and the retail stores of other companies. The Complainant promotes the CONVERSE Marks extensively through worldwide print, web and television advertising as well as sports sponsorships.
The Complainant owns various trade mark registrations for the CONVERSE Marks including:
Jurisdiction Trade mark No. Registration date
United States 0868375 April 22, 1969
United States 3289613 September 11, 2007
China 154594 February 2, 1982
CTM 7600117 December 11, 2009
The Complainant advertises and markets its products at its website resolves from the domain name . In particular, the following CONVERSE Mark is prominently displayed on the Complainant’s website (“CONVERSE Logo”):
The Disputed Domain Name was registered on February 4, 2010 and resolved to a website at “www.”. The website prominently features the CONVERSE Logo, offers specials on products (including providing prices) associated with the CONVERSE Marks, and provides facilities for communication regarding specific orders. The website also prominently features the trade mark UGG.
The Complainant sent letters of demand to the Respondent on June 23, 2011 and July 19, 2011. The Respondent did not respond to these letters.
Beyond the WhoIs information on the Disputed Domain Name and the website resolved from the Disputed Domain Name, not much more is known about the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the CONVERSE Marks;
b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is using the CONVERSE Marks without consent from the Complainant. The Respondent actions are not a bona fide offering of goods or services. The goods offered by the Respondent are counterfeit and unauthorized. The Complainant does not offer products under the UGG trade mark which is owned by an unrelated third party. The Respondent is not commonly known by the Disputed Domain Name or the name CONVERSE: and
c) The Respondent registered the Disputed Domain Name in bad faith. The CONVERSE Marks are famous by virtue of the Complainant’s extensive prior use. The Respondent knowingly and internationally used the CONVERSE Marks in the Disputed Domain Name to obtain commercial gain through the sale of products via the website resolved from the Disputed Domain Name by creating a likelihood of confusion with the CONVERSE Marks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has requested that English be the language of the proceeding. Having regard to the Complainant’s submissions and the circumstances, the Panel determines that English shall be the language of the proceeding for the following reasons:
a) The website resolved from the Disputed Domain Name is entirely in English, indicating that the Respondent is capable of communicating in English and is targeting the English-language market;
b) The Complainant is headquartered in the United States and is not in a position to conduct proceedings in Chinese without a great deal of expense and delay;
c) The Respondent has chosen not to participate in the proceeding and it would be inequitable to allow the Respondent to hide behind a language requirement: and
d) The Complaint has been submitted in English and no Response in any language exists. No foreseeable benefit can be achieved by insisting that Chinese be the language of the proceeding.
As such, the Panel shall proceed to dispose of the proceeding in English.
In order to succeed, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant clearly has rights in the CONVERSE Marks. The word “converse” is incorporated in its entirety in the Disputed Domain Name. The word “zone” is a descriptive term that refers to the website resolved from the Disputed Domain Name as one which offers products under the CONVERSE Marks for sale. Descriptive prefixes and suffixes have consistently been held by previous UDRP panels as generally incapable of distinguishing a domain name from a trade mark incorporated in its entirety in the domain name.
Therefore, the addition of the suffix “zone” to the word “converse” in the Disputed Domain Name does not assist to distinguish the Disputed Domain Name from the CONVERSE Marks. For the purposes of the Policy, the Disputed Domain Name is confusingly similar to the CONVERSE Marks. The 1st limb of paragraph 4(a) is established. B. Rights or Legitimate Interests
The Complainant confirmed that the Respondent has not been authorized to use the CONVERSE Marks. The Respondent is an individual whose name is not “conversezone”. Nothing in the evidence suggests the Respondent is commonly known by this name.
The Respondent has adopted the CONVERSE Logo on the website resolved from the Disputed Domain Name. It is reasonable to conclude that the Respondent was aware of the CONVERSE Marks when he registered the Disputed Domain Name and must have done so to associate with the same for commercial benefit. Such action is not acceptable fair use.
In the circumstances, there is a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. In the absence of a Response, the prima facie case stands unrebutted. The Panel holds that the 2nd limb of paragraph 4(a) is established. C. Registered and Used in Bad Faith
Based on the evidence, it is inconceivable that the Respondent was not aware of the CONVERSE Mark at the time of registering the Disputed Domain Name.
Paragraph 4(b)(iv) of the Policy specifically highlights the following example of bad faith registration and use:
“by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”
It is evident from the website resolved from the Disputed Domain Name that commercial gain was a key objective, if not the only objective, for the Respondent registering and using the Disputed Domain Name. By adopting the CONVERSE Marks in the Disputed Domain Name, the Respondent must have expected a likelihood of confusion with the CONVERSE Marks to be created. The website is also dressed up with the CONVERSE Logo and products offered for sale thereon are associated with the CONVERSE Marks. Any reasonable visitor to the website will likely be confused and misled.
The facts of the present case fall within the ambit of the form of bad faith registration and use exemplified in paragraph 4(b)(iv) of the Policy. The Panel accordingly determines that the 3rd limb of paragraph 4(a) of the Policy is also established.
The Complainant alleges that the website offers counterfeit products for sale. However, there is no evidence beyond the Complainant’s allegation. No doubt, this is a serious allegation and any reasonable person falsely accused of counterfeiting would have objected vehemently. The silence of the Respondent strongly suggests that there is justification in the allegation. Nevertheless, since the Panel has already made a determination regarding the 3rd limb of paragraph 4(a), it is not necessary for the Panel to make a finding in this regard. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: October 17, 2011
Full & Egal Universal Law Academy